DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1. This action is in response to the communication filed on February 23, 2024. Claims 1-20 were originally received for consideration. No preliminary amendments for the claims have been received.
2. Claims 1-20 are currently pending consideration.
Information Disclosure Statement
3. An initialed and dated copy of Applicant’s IDS (form 1449), receive don August 29, 2024, is attached to this Office Action.
Claim Objections
3. Claims 11-18 and 20 are objected to because of the following informalities: These claims all depend on the incorrect claim. The system claims of 11-18 should depend on claim 10 and the corresponding dependent claims and claim 20 should depend on claim 19. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-10, and 13-19is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marks (U.S. Patent Pub. No. US 2023/0037728).
Regarding claim 1, Marks discloses:
A computer-implemented method comprising:
generating, by a computer executing a first smart contract, one or more authentic tokens on a blockchain (paragraphs 0049-0050: a Unique Identity Asset Marker (UIAM) token may be understood to be a nonfungible digital token (NFT) that may be indicative of ownership of a particular unit of an asset, entity’s identity, an entity’s credentials, or may reflect the token holder’s authorization to access data; UIAMs may be tokenized real world assets, synthetic commodities and a user’s ownership in a UIAM token may be evidenced by a user’s possession of such tokens by the user’s digital wallet);
transmitting, by the computer, a notification to a client server indicating an authentic token, the notification including one or more identifiers for one or more digital wallets associated with the client server (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller);
in response to receiving a request from the client server indicating a synthetic token corresponding to the authentic token (paragraphs 0049-0050, 0081, 0113: a registered seller may request creation of a parent UIAM token and corresponding child UIAM token in UIAM application entity via computing device);
updating, by the computer, the authentic token associated with the client server according to the synthetic token as indicated by the request (paragraphs 0049-0050, 0081, 0158: UIAM Application Entity 120 may be configured to push out application updates to buyer mobile/computing devices 115, seller computing/mobile devices 113, and/or the like; Then, as in step 330, upon receiving the funds, UIAM Application Entity 120 may convert the funds into Private Utility Tokens (PUT) via its private blockchain, and record buyer 105's ownership therein and thereof. A PUT may be understood to be a private cryptocurrency maintained on a private blockchain network. In some preferred embodiments each PUT may be pegged to a certain fiat currency value).
Claim 4 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The method according to claim 1, wherein the computer generates the synthetic token for a platform wallet (paragraphs 0049-0050: a user's ownership a UIAM token may be evidenced by a user's possession of such token(s) by the user's digital wallet (or in alternative embodiments, a user's digital vault). As is known in the art, the user may possess a private cryptographic key the provides secure access to her digital wallet and may evince ownership to the wallet and its contents).
Claim 5 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The method according to claim 1, wherein the request is at least one of a conversion request, an order request, a reimbursement request or a transaction request (paragraphs 0089, 0113: financial transactions or fee payments).
Claim 6 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The method according to claim 1, further comprising:
receiving, by the computer, a transaction update associated with a first digital wallet, indicating a number of synthetic tokens (paragraph 0059: Each UIAM Child token may represent a number of real-world items (and/or digital items) that may be linked to its Parent UIAM and the other minted Child UIAM tokens via a particular genetic make-up, a particular formula, a specific set of environmental conditions, and/or the like); and
converting, by the computer, one or more synthetic tokens to a corresponding one or more authentic tokens based upon the number of synthetic tokens (paragraphs 0081, 0113, 0142, 0158: upon receiving the funds, UIAM Application Entity 120 may convert the funds into Utility Tokens (UT), and record buyer 105's ownership therein and thereof. For example, UIAM Application Entity 120 may provide UTs commensurate with the provided funds into buyer 105's wallet within UIAM Application Entity 120. In some preferred embodiments, each UT may be pegged to a certain fiat currency value, for example $1 US. Additionally, it may be preferred that UTs be created under the ERC 20 protocols or the like).
Claim 7 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The method according to claim 6, further comprising invalidating, by the computer, the synthetic token (paragraph 0150: UIAM Application Entity 120 may remove the UTs from buyer's account. In certain preferred embodiments, the UTs removed from buyer 103's account may be burned. Such actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger).
Claim 8 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The method according to claim 6, further comprising updating, by the computer, a ledger according to the number synthetic tokens transferred according to the request (paragraphs 0049-0050, 0081, 0113, 0149-0150: actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger).
Claim 9 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The method according to claim 6, further comprising updating, by the computer, a platform wallet according to the number of synthetic tokens transferred according to the request (paragraphs 0049-0050, 0081, 0113, 0142, 0158: updating the digital wallet).
Regarding claim 10, Marks discloses:
A system comprising:
a memory (paragraph 0094: memory);
a computer comprising one or more processors configured to:
generate, by a computer executing a first smart contract, one or more authentic tokens on a blockchain (paragraphs 0049-0050: a Unique Identity Asset Marker (UIAM) token may be understood to be a nonfungible digital token (NFT) that may be indicative of ownership of a particular unit of an asset, entity’s identity, an entity’s credentials, or may reflect the token holder’s authorization to access data; UIAMs may be tokenized real world assets, synthetic commodities and a user’s ownership in a UIAM token may be evidenced by a user’s possession of such tokens by the user’s digital wallet);
transmit by the computer, a notification to a client server indicating an authentic token, the notification including one or more identifiers for one or more digital wallets associated with the client server (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller);
in response to receiving a request from the client server indicating a synthetic token corresponding to the authentic token (paragraphs 0049-0050, 0081, 0113: a registered seller may request creation of a parent UIAM token and corresponding child UIAM token in UIAM application entity via computing device);
update, by the computer, the authentic token associated with the client server according to the synthetic token as indicated by the request (paragraphs 0049-0050, 0081, 0158: UIAM Application Entity 120 may be configured to push out application updates to buyer mobile/computing devices 115, seller computing/mobile devices 113, and/or the like; Then, as in step 330, upon receiving the funds, UIAM Application Entity 120 may convert the funds into Private Utility Tokens (PUT) via its private blockchain, and record buyer 105's ownership therein and thereof. A PUT may be understood to be a private cryptocurrency maintained on a private blockchain network. In some preferred embodiments each PUT may be pegged to a certain fiat currency value).
Claim 13 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The system according to claim 1, wherein the computer generates the synthetic token for a platform wallet on the blockchain (paragraphs 0049-0050: a user's ownership a UIAM token may be evidenced by a user's possession of such token(s) by the user's digital wallet (or in alternative embodiments, a user's digital vault). As is known in the art, the user may possess a private cryptographic key the provides secure access to her digital wallet and may evince ownership to the wallet and its contents).
Claim 14 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses: The system according to claim 1, wherein the request is at least one of a conversion request, an order request, a reimbursement request or a transaction request (paragraphs 0089, 0113: financial transactions or fee payments).
Claim 15 is rejected as applied above in rejecting claim 1. Furthermore, Marks discloses:
The system according to claim 1, wherein the one or more processors are further configured to:
receive, by the computer, a transaction update associated with a first digital wallet, indicating a number of synthetic tokens (paragraph 0059: Each UIAM Child token may represent a number of real-world items (and/or digital items) that may be linked to its Parent UIAM and the other minted Child UIAM tokens via a particular genetic make-up, a particular formula, a specific set of environmental conditions, and/or the like); and
convert, by the computer, one or more synthetic tokens to a corresponding one or more authentic tokens based upon the number of synthetic tokens (paragraphs 0081, 0113, 0142, 0158: upon receiving the funds, UIAM Application Entity 120 may convert the funds into Utility Tokens (UT), and record buyer 105's ownership therein and thereof. For example, UIAM Application Entity 120 may provide UTs commensurate with the provided funds into buyer 105's wallet within UIAM Application Entity 120. In some preferred embodiments, each UT may be pegged to a certain fiat currency value, for example $1 US. Additionally, it may be preferred that UTs be created under the ERC 20 protocols or the like).
Claim 16 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The system according to claim 6, wherein the one or more processors are further configured to burn the synthetic token (paragraph 0150: UIAM Application Entity 120 may remove the UTs from buyer's account. In certain preferred embodiments, the UTs removed from buyer 103's account may be burned. Such actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger).
Claim 17 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The system according to claim 6, wherein the one or more processors are further configured to update a ledger according to the number synthetic tokens transferred according to the request (paragraphs 0049-0050, 0081, 0113, 0149-0150: actions may be recorded on a private blockchain of UIAM Application Entity 120, a public blockchain of Public Blockchain Entity 160, and/or stored in a centralized digital ledger).
Claim 18 is rejected as applied above in rejecting claim 6. Furthermore, Marks discloses:
The system according to claim 6, wherein the one or more processors are further configured to update a platform wallet according to the number of synthetic tokens transferred according to the request (paragraphs 0049-0050, 0081, 0113, 0142, 0158: updating the digital wallet).
Regarding claim 19, Marks discloses:
19. A non-transitory storage medium comprising instructions that when executed by one or more processors, cause the one or more processors to:
generate, by a computer executing a first smart contract, one or more authentic tokens on a blockchain (paragraphs 0049-0050: a Unique Identity Asset Marker (UIAM) token may be understood to be a nonfungible digital token (NFT) that may be indicative of ownership of a particular unit of an asset, entity’s identity, an entity’s credentials, or may reflect the token holder’s authorization to access data; UIAMs may be tokenized real world assets, synthetic commodities and a user’s ownership in a UIAM token may be evidenced by a user’s possession of such tokens by the user’s digital wallet);
transmit by the computer, a notification to a client server indicating an authentic token, the notification including one or more identifiers for one or more digital wallets associated with the client server (paragraph 0023, 0049-0050, : receiving financial account data and identifying information from a prospective seller and verifying the data provided by the prospective seller, and if the data verification is successful, whitelisting a digital wallet of the prospective seller via a smart contract execution on the first blockchain and generating a UIAM minter account for the seller, recording the verified seller identity and minter status in the first blockchain and providing a UIAM token and an identity token to the verified seller);
in response to receiving a request from the client server indicating a synthetic token corresponding to the authentic token (paragraphs 0049-0050, 0081, 0113: a registered seller may request creation of a parent UIAM token and corresponding child UIAM token in UIAM application entity via computing device);
update, by the computer, the authentic token associated with the client server according to the synthetic token as indicated by the request (paragraphs 0049-0050, 0081, 0158: UIAM Application Entity 120 may be configured to push out application updates to buyer mobile/computing devices 115, seller computing/mobile devices 113, and/or the like; Then, as in step 330, upon receiving the funds, UIAM Application Entity 120 may convert the funds into Private Utility Tokens (PUT) via its private blockchain, and record buyer 105's ownership therein and thereof. A PUT may be understood to be a private cryptocurrency maintained on a private blockchain network. In some preferred embodiments each PUT may be pegged to a certain fiat currency value).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2-3, 11-12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marks (U.S. Patent Pub. No. US 2023/0037728) in view of Foote et al. (U.S. Patent Pub. No. US 2021/0209684).
Claim 2 is rejected as applied above in rejecting claim 1. Furthermore, Marks does not explicitly disclose receiving, by the computer, an order request from the client server, the order request instructing the computer to generate the one or more authentic tokens on the blockchain and one or more corresponding assets. However, in an analogous art, Foote discloses that an agent or sender can initiate a purchase order of the universal currency token through the digital wallet or a connected currency account. The pool account receives the funds used for the purchase order of the universal currency token. A functional call is made to the universal currency token smart contract after a successful purchase order is made. The newly generated universal smart token is issued to the sender or agent in the amount of the purchase order and delivered to the agent's or sender's digital wallet. The sender or agent can send the universal currency token to the recipient's digital wallet or a local agent acting on behalf of the recipient (paragraph 0118). This newly generated universal smart token is analogous to the authentic tokens and the purchase order is analogous to the order request of the claims. It would have been obvious to one of ordinary skill in the art to utilize the order request disclosed by Foote in the system of Marks to allow an agent or sender to initiate the purchase of the token (paragraph 0118).
Claim 3 is rejected as applied above in rejecting claim 1. Furthermore, Marks does not explicitly disclose receiving, by the computer, a weighted value for an asset from a third-party database, wherein the authentic token indicates the weighted value, and wherein the computer generates the authentic token using the weighted value for the asset of the authentic token. In an analogous art, Foote discloses receiving, by the computer, a weighted value for an asset from a third-party database, wherein the authentic token indicates the weighted value and wherein the computer generates the authentic token using the weighted value for the asset of the authentic token (paragraphs 0043-0044). Foot discloses a host database which can control all the functionality of the application wherein the application communicates with the host database (paragraphs 0043-0044). Furthermore, Foote discloses that the application can fully integrate the third-party connections utilized by the financial services system and can provide connectivity between the disparate systems of the financial services system. Foote discloses that the universal currency token can be set to the value of one dollar and backed by the funds deposited into the pool account (paragraph 0077). It would have been obvious to one of ordinary skill in the art to utilize the weighted value of the asset from a third-party database to allow the system to generate an authentic token associated with a particular order request (Foote: paragraphs 0043-0044).
Claim 11 is rejected as applied above in rejecting claim 1. Furthermore, Marks does not explicitly disclose receiving, by the computer, an order request from the client server, the order request instructing the computer to generate the one or more authentic tokens on the blockchain and one or more corresponding assets. However, in an analogous art, Foote discloses that an agent or sender can initiate a purchase order of the universal currency token through the digital wallet or a connected currency account. The pool account receives the funds used for the purchase order of the universal currency token. A functional call is made to the universal currency token smart contract after a successful purchase order is made. The newly generated universal smart token is issued to the sender or agent in the amount of the purchase order and delivered to the agent's or sender's digital wallet. The sender or agent can send the universal currency token to the recipient's digital wallet or a local agent acting on behalf of the recipient (paragraph 0118). This newly generated universal smart token is analogous to the authentic tokens and the purchase order is analogous to the order request of the claims. It would have been obvious to one of ordinary skill in the art to utilize the order request disclosed by Foote in the system of Marks to allow an agent or sender to initiate the purchase of the token (paragraph 0118).
Claim 12 is rejected as applied above in rejecting claim 1. Furthermore, Marks does not explicitly disclose receiving, by the computer, a weighted value for an asset from a third-party database, wherein the authentic token indicates the weighted value, and wherein the computer generates the authentic token using the weighted value for the asset of the authentic token. In an analogous art, Foote discloses receiving, by the computer, a weighted value for an asset from a third-party database, wherein the authentic token indicates the weighted value and wherein the computer generates the authentic token using the weighted value for the asset of the authentic token (paragraphs 0043-0044). Foot discloses a host database which can control all the functionality of the application wherein the application communicates with the host database (paragraphs 0043-0044). Furthermore, Foote discloses that the application can fully integrate the third-party connections utilized by the financial services system and can provide connectivity between the disparate systems of the financial services system. Foote discloses that the universal currency token can be set to the value of one dollar and backed by the funds deposited into the pool account (paragraph 0077). It would have been obvious to one of ordinary skill in the art to utilize the weighted value of the asset from a third-party database to allow the system to generate an authentic token associated with a particular order request (Foote: paragraphs 0043-0044).
Claim 20 is rejected as applied above in rejecting claim 1. Furthermore, Marks does not explicitly disclose receiving, by the computer, an order request from the client server, the order request instructing the computer to generate the one or more authentic tokens on the blockchain and one or more corresponding assets. However, in an analogous art, Foote discloses that an agent or sender can initiate a purchase order of the universal currency token through the digital wallet or a connected currency account. The pool account receives the funds used for the purchase order of the universal currency token. A functional call is made to the universal currency token smart contract after a successful purchase order is made. The newly generated universal smart token is issued to the sender or agent in the amount of the purchase order and delivered to the agent's or sender's digital wallet. The sender or agent can send the universal currency token to the recipient's digital wallet or a local agent acting on behalf of the recipient (paragraph 0118). This newly generated universal smart token is analogous to the authentic tokens and the purchase order is analogous to the order request of the claims. It would have been obvious to one of ordinary skill in the art to utilize the order request disclosed by Foote in the system of Marks to allow an agent or sender to initiate the purchase of the token (paragraph 0118).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAVEH ABRISHAMKAR whose telephone number is (571)272-3786. The examiner can normally be reached M-F 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung Kim can be reached at 571-272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAVEH ABRISHAMKAR/
09/15/2025Primary Examiner, Art Unit 2494